In its recent decision D2002-0273 (July 8, 2002), the WIPO Arbitration and Mediation Center has dismissed the request by the German state of Saxony-Anhalt (or Sachsen-Anhalt, in German) for transfer of ownership of the domain name sachsen-anhalt.com from its current owner, a company the web site of which promoted pornographic material and published addresses of brothels in the region of Germany where the state of Saxony-Anhalt is also located.
This, in spite of the fact, that the current owner had quite obviously acted in bad faith by applying for registration of the domain name using the name of a resident of Tunisia, and was not represented during the arbitration proceedings. Thus, WIPO was compelled to notify this person of the state of Saxony-Anhalt’s request as Respondent, whereupon the named Respondent wrote two e-mails, one in English, the other in French, stating he knew nothing of the case, and that his identity was being misused.
Although the circumstances of the case are spectacular, the decision by the WIPO panelist is itself worthy of comment.
To begin with, the panelist skirted the important issue, of whether a territorial entity, such as a country, state or city can be considered a juristic person.
In Brazil, this question is not an issue, as art. 14 of the Brazilian Civil Code clearly states that the Union, the States, the Federal District and the (legally constituted) municipalities are considered juristic persons. However, the law does not make such a clear statement in many other countries.
In the celebrated barcelona.com case put before a United States District Court, the question did not arise, as the Plaintiff in that case was not the City of Barcelona, but that city’s governing body (Excelentísimo Ayuntamiento de Barcelona). Thus, the court was in a position to base its decision on the fact that this governing body as a juristic person is the owner of several Spanish trademarks bearing the word "BARCELONA".
However, in the case concerning the domain name sachsen-anhalt.com, the panelist’s decision begins thus: "Complainant is Land Sachsen-Anhalt, a federal state of Germany …". There is nothing in the panelist’s decision indicating that the case was actually brought to arbitration by that state’s governing body in lieu of the state itself.
Accordingly, the panel’s first task would have been to establish that the federal state of Saxony-Anhalt is indeed a juristic person, and as such qualified to be a party in any form of litigation or arbitration.
Unfortunately, there is no clear German jurisprudence as to that question. In the legal proceedings involving the domain name deutschland.de, the regional court of Berlin stated that the Federal Republic of Germany is a juristic person, without, however, elaborating on the issue or citing any form of precedent or learned opinion. The parties to that case settled the dispute in the second instance and the domain name deutschland.de is now in the ownership of the Federal German government’s Office of Press and Information, not, however, the Federal Republic of Germany.
The WIPO panelist, himself obviously not an expert on German law, accepted the complaint without discussing the issue at this point.
The issue was, however, the principal element behind the panelist’s decision to reject the complaint. According to the decision, the Complainant (i.e. the State of Saxony-Anhalt) would have had to prove ownership of a trademark registration protecting the term "SACHSEN-ANHALT" in its favor.
The panelist could only come to this conclusion based on the assumption that Saxony-Anhalt is indeed a "person" and as such must demonstrate prior trademark rights in order to recoup an identical domain name registered to another person under the first-to-file principle.
In part, some of the responsibility for this extremely unsatisfactory decision lies with the Complainant itself. Its attorneys basically founded their claim on the allegation that "names of countries, states and cities enjoy a legal protection equivalent to trademark or servicemark in many jurisdictions" (sic). Also, they cited § 12 of the German Civil Code, which says that the party entitled to the use of a name may claim cease of such use by another party using said name without entitlement.
However, the Plaintiff failed to mention that under German trademark legislation, it is not possible to register "SACHSEN-ANHALT" as a trademark, regardless of whether territorial entities are juristic persons or not.
If one does conclude that territorial entities are juristic persons, the impossibility to register "SACHSEN-ANHALT" as a trademark would indeed arise out of § 12 of the German Civil Code. Although the wording of this norm does not explicitly say that it is only applicable to natural persons, i.e. human beings, as being entitled to use of a name, this can be inferred from the fact that it is located within the chapter of the code dealing with natural persons. German jurisprudence and scholarly opinion are unanimous in that the rules regarding the protection of natural persons’ rights to the use of a name are also applicable in benefit of juristic persons.
But also assuming that territorial entities are not to be considered persons, it would not be possible to register "SACHSEN-ANHALT" as a trademark in Germany. This is because § 8 (2) no. 6 of the German Law on Trademarks (Markengesetz) expressly states that coats-of-arms, flags, or other symbols of sovereignty or seals of a national locality are excluded from registration.
This means, that, at least in Germany, not even the Complainant could have obtained trademark rights for the expression "SACHSEN-ANHALT". The same, incidentally, applies for Brazil, where art. 124 Item I of the Industrial Property Law clearly states that crests, armorial bearings, medals, flags, emblems, official public distinctions and monuments, be they national, foreign or international, as well as any respective designations, figures or imitations are not apt for registration as trademarks.
Public administrations all over the world have been notoriously slow to keep up with technological progress due to the system of checks and balances underlying the spending of taxpayers’ money. Territorial entities everywhere have not been very quick in registering their own geographical denominations as domain names, leading to the loss of these names to squatters and domain grabbers under the first-to-file principle.
Also, the panelist did not make clear, to what extent the Complainant would have had to demonstrate trademark rights in order to claim the sachsen-anhalt.com domain name. As has been demonstrated, such rights are legally impossible to acquire in countries such as Germany or Brazil.
Therefore, the WIPO panelist’s decision has disturbing implications, not only for the governing bodies of territorial entities, but also for the inhabitants of these entities. This is because users wishing to find business, geographical or tourist information concerning these entities are likely to browse the internet using the respective territorial entity’s name added by either .com or the national domain ending, .de in the present case. Thus, the first impression someone looking for information about this entity would receive is what the domain grabber sees fit to provide, and not what that entity’s governing body or its inhabitants would like to see.
Of course, in countries such as Brazil, where sub-domains are provided to show the nature of the owner of a domain name, such as .gov, for government entities, .com, for businesses, .edu, for schools, etc., the risk of receiving misleading information is considerably lower. Someone looking for information about the Federative Republic of Brazil will easily find it at www.brasil.gov.br (or even www.brazil.gov.br). Furthermore, Brazilians are luckier than the residents of Saxony-Anhalt, as the owners of both brasil.com and brazil.com peddle services that are not as disreputable as the owner of the sachsen-anhalt.com domain.
The WIPO panelist’s decision effectively leaves the residents of territorial entities, the administrators of which have been slow to protect these entities’ respective names either as trademarks or by appropriation of internet domains at the mercy of domain and trademark grabbers, who in turn are in a position to make large amounts of money by being able to exploit the identification by the consumer of the geographical characteristics of a territory with its name.
Hopefully, the government of the state of Saxony-Anhalt will continue to pursue its case in a court of law, so that this unsatisfactory situation can be corrected.
